CAFC Weekly: Week of May 7, 2011

by Orlando Lopez

May 7th, 2011

There was only one precedential patent related opinion this week, an opinion related to reissue applications.

In the opinion, In re Mostafazadeh, Mostafazadeh and Scott are the inventors of U.S. Patent Number 6,034,423 (“the ’423 patent”), which issued in 2000, and relates to semiconductor packaging. During prosecution, the claims were amended to include an additional limitation, “circular attachment pads,” in order to distinguish the claims from the prior art. In 2001, the inventors filed a reissue application amending the additional limitation to “attachment pads.” The examiner rejected the reissue application, since the amendment was considered as an attempt to recapture subject matter surrendered during prosecution. The inventors appealed to the Board of Patent appeals and Interferences (BPAI), and the BPAI upheld the rejection. The inventors then appealed to the CAFC, which upheld the BPAI decision. The opinion discusses the possible recapture of subject matter surrendered during prosecution. As such, the opinion should be of interest to those pursuing reissue applications.